Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 1 of 61

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1 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 1 of 61 UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF GEORGIA ATLANTA DIVISION HEALTHIER CHOICE FLOORING, ) LLC, ) Plaintiff, ) CIVIL ACTION NO. v. ) 1:11-CV-2504-CAP CCA GLOBAL PARTNERS, INC., ) Et al. ) Defendants. ) REPORT AND RECOMMENDATION OF SPECIAL MASTER I. BACKGROUND The Plaintiff brought this action asserting a variety of trademark infringement, trade dress infringement, false advertising, counterfeiting, trademark dilution, false designation of origin, palming off and unfair competition claims against the Defendants. [Docket No. 70, Amended Complaint at par. 1] Pursuant to an Order of the Court dated October 23, 2012, the undersigned was appointed Special Master to resolve a number of pending and emerging discovery disputes between the parties. [Dckt. No. 158] Each of these issues and the Special Master s recommendations are described herein. 1

2 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 2 of 61 The first motion at issue is the Defendants Motion to Compel Substantive Corporate Representative Testimony. [Dckt No. 138] This motion seeks the following relief: (a) an order compelling Plaintiff s counsel to discontinue its practice of improperly instructing the witness not to answer and asserting speaking objections in violation of Federal Rule of Civil Procedure 30(c) [Dckt No. 138 at 1]; and (b) an order instructing Plaintiff to produce deposition witnesses who will answer substantive questions. [Dckt No 138 at 1] The second motion at issue is the Plaintiff s Motion for Protective Order Preventing Defendants from Asking Questions Outside the Scope of the Rule 30(b)(6) Designations. [Dckt No. 149] This motion notes that the corporate designees of the Plaintiff were previously deposed in their individual capacities and asserts that questions outside the scope impermissibly attempt to re-open these individual depositions without a court order. The third motion at issue is Plaintiff s Motion for Protective Order Regarding Defendant s Abusive Third-Party Subpoena Practice. [Dckt No. 152] This motion seeks an order prohibiting Defendants from issuing further non-party subpoenas without leave of Court. The fourth motion at issue is Plaintiff s Motion for Protective Order limiting the timing and scope of the deposition of Michael Norton in his individual capacity. 2

3 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 3 of 61 [Dckt No. 166] This motion is based on the fact that Mr. Norton has already been deposed, first as an expert witness, and subsequently as a corporate designee under Rule 30(b)(6). The fifth motion at issue is Plaintiff s Motion seeking a determination as to the scope of the waiver of attorney-client privilege implicated by Plaintiff s decision to rely upon advice of counsel as a defense to the Defendants counterclaim alleging the fraudulent filing of an incontestability affidavit in connection with Plaintiff s HEALTHIER CHOICE trademark registration. [Dckt No. 167] The sixth motion at issue is Defendants Motion to deem responses to over two hundred and fifty requests to admit as admitted. [Dckt No. 171] The Special Master conducted a hearing on these motions on November 28, At the hearing, the parties agreed to several undertakings in an effort to resolve or at least narrow the scope of issues in need of resolution. After the November 28 hearing, a dispute arose between the parties as to the reimbursement of fees and expenses relating to expert witness discovery, including document production, document review and deposition. The Special Master directed the parties to file letter briefs addressed to this issue, and the parties complied. [Dckt. Nos ] 3

4 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 4 of 61 A supplemental telephone conference was conducted on January 3, 2013 to discuss the remaining issues relating to the attorney-client privilege waiver, and the dispute relating to expert witness fees. The Special Master has now considered the briefs of the parties, the evidence of record and the arguments of counsel at the hearing and supplemental call, and herein renders the following report and recommendations on the disputed matters described above. II. THE CORPORATE DEPOSITION OF PLAINTIFF (MOTIONS 1-2) Rule 30 of the Federal Rules of Civil Procedure states in relevant part: (a) When a Deposition May Be Taken. * * * * * (2) With Leave. A party must obtain leave of court, and the court must grant leave to the extent consistent with Rule 26(b)(2): * * * * * and: (A) if the parties have not stipulated to the deposition * * * * * case; (ii) the deponent has already been deposed in the * * * * * (b) Notice of the Deposition; Other Formal Requirements. 4

5 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 5 of 61 * * * * * (6) Notice or Subpoena Directed to an Organization. In its notice or subpoena, a party may name as the deponent a public or private corporation, a partnership, an association, a governmental agency, or other entity and must describe with reasonable particularity the matters for examination. The named organization must then designate one or more officers, directors, or managing agents, or designate other persons who consent to testify on its behalf; and it may set out the matters on which each person designated will testify. A subpoena must advise a nonparty organization of its duty to make this designation. The persons designated must testify about information known or reasonably available to the organization. This paragraph (6) does not preclude a deposition by any other procedure allowed by these rules. Fed. R. Civ. P. 30 (emphasis added). The Defendants served Plaintiff with a corporate deposition notice specifying 49 topics upon which the Plaintiff was to designate a witness and provide testimony. [Dckt No ] Among the topics specified in the notice are as follows: Topic 1: The development and creation of any of the trademark(s) alleged by Healthier Choice Flooring, LLC to have been infringed by any defendant. Topic 2: The development and creation of any of the trade dress alleged by Healthier Choice Flooring, LLC to have been infringed by any defendant. Topic 3: The revenue, cost of goods sold, and profit derived from sales of carpet cushion or underlayment manufactured by 5

6 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 6 of 61 Healthier Choice Flooring, LLC, and the creation of records reflecting same. Topic 4: The revenue, cost of goods sold, and profit derived from the sales of carpet cushion or underlayment manufactured by Healthier Choice Flooring, LLC in connection with the MoistureBloc logo, and the creation of records reflecting same. Topic 5: The revenue, cost of goods sold, and profit derived from the sales of carpet cushion or underlayment manufactured by Healthier Choice Flooring, LLC in connection with the Made with Bio Materials logo, and the creation of records reflecting same. Topic 6: The revenue, cost of goods sold, and profit derived from the sales of carpet cushion or underlayment manufactured by Healthier Choice Flooring, LLC in connection with the Platinum Plus logo, and the creation of records reflecting same. Topic 7: Healthier Choice Flooring, LLC s advertising expenditures and sales revenue with respect to each mark asserted against defendants since the date of first use for each of the marks. Topic 10: The creation of the advertisements, catalogs, circulars, leaflets, signs, point of sale materials, internet publications or other advertising, promotional or marketing materials for the goods and services sold under the Healthier Choice Flooring, LLC Marks. Topic 11: Any market research, focus group study or survey concerning the Healthier Choice Marks. Topic 13: All licenses, agreements or other electronically stored information, documents, or tangible things concerning the grant to others of any authorization, consent or license to 6

7 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 7 of 61 use the Healthier Choice Marks or ability to co-exist with other trademarks having HEALTHIER CHOICE as part of the mark. Topic 14: Your knowledge of others using the terms healthy, healthier, or healthiest in connection with the sale or offer for sale of goods and services. Topic 15: Any market plans, forecasts, or projections relating to marketing, sales, or production for the goods and services sold under the Healthier Choice Marks. Topic 16: Any instances of confusion between Healthier Choice Marks and the Healthier Living Marks, including, without limitation misdirected mail, , telephone calls, orders, or inquiries concerning any relationship or association between the parties. Topic 17: Any instances of confusion between the trade dress of carpet cushion or underlayment products manufactured by Healthier Choice Flooring, LLC and the trade dress of the Healthier Living Flooring Installation System, including, without limitation misdirected mail, , telephone calls, orders, or inquiries concerning any relationship or association between the parties. Topic 18: Any evidence of customer recognition of the Healthier Choice Marks in the marketplace as trademarks or service marks of Healthier Choice Flooring, LLC. Topic 19: Any evidence of customer recognition of the of carpet cushion or underlayment products manufactured by Healthier Choice Flooring, LLC as that of Healthier Choice Flooring, LLC. Topic 30: The basis for allegations of Healthier Choice Flooring, LLC in its Complaint and the Amended Complaint in this case. 7

8 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 8 of 61 Topics address The basis for allegations of [Plaintiff] concerning [Counts I-VIII of the Amended Complaint]. Topic 42: The factual basis of Healthier Choice Flooring, LLC for its allegation that any purported infringement by any defendant was willful. Topic 43: Any communications or agreements with any third party concerning this lawsuit or any defendant. Topic 45: The factual basis for any claims of Healthier Choice Flooring, LLC for monetary relief. Topic 46: The corporate structure and history of Healthier Choice Flooring, LLC including a discussion of any corporate organization chart. [Dckt No ] In response to the Notice of Deposition directed to the Plaintiff, Plaintiff designated and produced Craig Poteet and Drew Holland as two of its representatives. Additionally, Plaintiff served Defendants with Plaintiff s Supplemental Responses and Objections to the corporate deposition notice. [Dckt No ] Plaintiff identified the topics as to which each witness would testify. For example, with respect to Mr. Poteet, Plaintiff designated him as a witness on topics 8-9, 11-14, 22, and [Dckt Nos and 138-4] Furthermore, Plaintiff advised that Mr. Poteet would be available to confirm on the record that the position taken by Plaintiff in its substantive written response to topics 30-38, 42 and 45 (each of which sought information underlying the basis for the claims in suit) was the position of the Plaintiff. [Dckt No ] Messrs. 8

9 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 9 of 61 Poteet and Holland testified as corporate representatives on August 23-24, [Dckt Nos and 138-3] Both witnesses were previously deposed in their individual capacities. [Hearing Tran. at 29] The first issue raised in the Defendant s motion to compel substantive corporate testimony pertains to a series of questions as to which the corporate representative was instructed not to answer on the basis that the question asked exceeded the scope of the deposition topics on which the witness was designated to testify. As a threshold matter, the Defendants argue that instructing a corporate representative not to answer a question on the basis of scope (rather than privilege) is categorically unacceptable. See, e.g., United States ex. rel. Tiesinga v. Dianon Sys., Inc., 240 F.R.D. 40, 43 (D. Conn. 2006) (improper for counsel to direct a witness not to answer a question in a deposition, even if question goes beyond the scope of the deposition notice). To this point, Plaintiff responds that it is improper to ask a witness who has already been deposed in his individual capacity questions which exceed the scope of the deposition topics for which the person is designated. 1 Noting that the Court 1 This concern is manifest in the Plaintiff s motion for protective order relating to the scope of the corporate deposition, which was filed after the corporate deposition adjourned. [Dckt No. 149] 9

10 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 10 of 61 signed off on the scheduling order in the case which included language to the effect that there are no alterations to the normal rules of discovery relating to individual depositions (e.g., limits on the number of depositions or the seven hour rule) 2, Plaintiff cites Fed. R. Civ. P. 30(c)(2) for the proposition that A person may instruct a deponent not to answer only when necessary to preserve a privilege, to enforce a limitation ordered by the court, or to present a motion under Rule 30(d)(3). (Emphasis added). Finally, Plaintiff argues that the burden and expense of reconvening the depositions heavily outweighs any potential benefit. See Provide Commerce, Inc. v. Preferred Commerce, Inc., No CIV 2008 WL , at *2 (S.D. Fla. Feb. 8, 2008) (denying motion to compel in case where certain instructions to deponent not to answer questions were improper). Normally, the Defendants would have the better of this threshold argument. See generally King v. Pratt & Whitney, 161 F.R.D. 475 (S.D. Fla. 1995). It is widely acknowledged that lawyers in a deposition should avoid instructing a witness not to answer a question, except where the question implicates the attorney-client privilege. If a question exceeds the scope of a noticed topic, the court can decide that the answer given by the witness is not binding upon the corporation. In such a case, the testimony can nevertheless be considered the testimony of the witness in his individual capacity. However, unlike King and its 2 See Hearing Tran. at and Hearing Exhibits

11 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 11 of 61 progeny, there is no case law addressing the limited circumstance at issue in the case at bar, where the corporate designee has already been deposed as an individual, and then is asked questions outside the scope of the corporate deposition notice. Assuming the scope of the topics is in fact exceeded, the situation before the Court now is more closely related to an attempt to take a second deposition of a witness is his individual capacity, which is conduct prohibited by Rule 30(a)(2)(A)(ii) unless a court order is first obtained. In such a situation, where the individual has already given a deposition and the scope of the corporate deposition notice is plainly exceeded, counsel is justified in refusing to permit the deposition of the individual to proceed as to the subject matter that is beyond the scope. 3 In addition, the Court entered the scheduling order in this case with its specific notation that the restrictions of the discovery rules were not to be altered. [Hearing Tran. at and Hearing Exs. 2-3] This lends additional credence to the Plaintiff s argument. See Fed. R. Civ. P. 30(c)(2). For these reasons, I do not 3 During the hearing, all counsel agreed that in a situation where the seven hour rule for an individual s deposition is exceeded, counsel for the witness is justified in terminating the deposition proceedings until and unless a court order is obtained permitting the deposition to continue. [Hearing Tran., pp ] I find this to be an additional convincing analogy to the situation where an individual s deposition is closed, and without a court order, counsel attempts to question a witness for a second time in his or her individual capacity by exceeding the scope of the noticed topics for a corporate deposition. 11

12 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 12 of 61 recommend a ruling here that each instruction not to answer was per se unreasonable. At the same time, the policy of Rule 30 is in general to lawyers to object to improper questions, but not to instruct witnesses not to answer. Normally, the ruling on a deposition asserted in deposition is reserved to the Court until the first use of the relevant portion of the transcript. When counsel is permitted to instruct a witness not to answer for reasons other than privilege, there is the potential for abuse of such an instruction because what constitutes an objectionable question to counsel may not comport with the opinion of the Court. As Defendants counsel noted during the hearing, 30(b)(6) depositions often require some latitude to ask the witness in question about his background with the corporation designating him, whether specifically referenced as a topic for inquiry or not. [Hearing Tran. at 48] As a check against abuse of the power to instruct a witness not to answer, this Court has been vigilant in sanctioning counsel in order to deter improper objections instructing the witness not to answer. See Forman v. Welding Serv., Inc., Case No. 04-CV-2838-TCB (Dckt No. 92 at 14, imposing attorney s fees as sanction for improper instruction to witness not to answer a question based on assertion of privilege, where the basis for the objection was overruled). In light of the foregoing, it is especially important that counsel for the witness exercise reasonableness and caution when employing an instruction not to 12

13 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 13 of 61 answer on the basis of scope. If and to the extent that an instruction not to answer is improvidently given, it has the grave potential to disrupt the deposition and, worse, to necessitate motion practice and a possible re-deposition of the witness. For this reason, I adopt the notion that scope objections particularly when accompanied by an instruction not to answer -- should be evaluated critically to make sure that they are not being interposed unfairly to obstruct the deposition proceedings. Such an evaluation is provided herein. A. Instructions Not to Answer In this case, there are twelve (12) sets of instructions not to answer at issue, each based on an objection that the question lacked a reasonable relationship to any of the topics as to which the witness was designated. [Dckt No. 138 at 7-9] Each set of objections and resulting instructions not to answer will be dealt with in turn. (1) Holland Deposition at 40:8-24 [Dckt No at 16]. The question giving rise to the objection/instruction not to answer was Why did the company choose the term Healthier Choice to identify its carpet cushion? I find this question to be related to Topic 1 of the deposition notice, and as such, the objection/instruction is overruled. (2) Holland Dep. at 127:20-130:12 [Dckt No at 17-20] The questions giving rise to the objection/instruction are (a) what is it that they [Plaintiff] believe is infringing upon what is shown in Exhibit 3T? ; (b) what 13

14 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 14 of 61 it is that you believe infringed that mark? ; and (c) What is it that makes you believe that the logo shown in Exhibit 3T is infringed by any of these defendants? Plaintiff asserts that these questions are related to Topic 1. However, Topic 1 is not fairly read as a topic relating to contentions of infringement. Such questions are implicated by one or more of Topics 30-38, as to which Mr. Holland was not offered as a witness. For this reason, I sustain the scope objection to these questions because Plaintiff lacked notice that it should have prepared Mr. Holland for questions relating to infringement prior to the deposition. (3) Holland Dep. at 137:23-138:19 and 141:12-142:4 [Dckt No at 22-25] The questions giving rise to the objection/instruction are (a) And [Exhibit] 3V uses different colors than 3U, correct? ; (b) What is it that you believe 3V is conveying? ; and (c) Is there anything about Exhibit U Stafford that would indicate to a consumer that those wavy lines are stopping things from going into the carpet or the subfloor or the cushion? Defendants assert that these questions are related to Topics 1, 16 and 17. However, there is nothing in these topics to suggest that they would cover infringement contentions, comparison of particular marks in question, or questions about these particular exhibits. Thus, I sustain the scope objection to these questions. (4) Holland Dep. at 156:3-13 [Dckt No at 26] 14

15 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 15 of 61 The question giving rise to the objection/instruction is are you aware of anything used by any Defendants that you believe infringes the trade dress shown in 3W? Defendants assert that this question is related to Topic 2. However, while Topic 2 relates to the development of Plaintiff s own trade dress at issue, it does not extend to contentions relating to infringement of trade dress by any defendant. Thus, I sustain the scope objection to this question. (5) Holland Dep. at 161:20-162:7 [Dckt No at 27-28] The question giving rise to the objection/instruction is Can you identify any trade dress in Exhibit 3X? Defendants assert that this question is related to Topic 2 relating to the development and creation of any of the trade dress asserted by Plaintiff. I find this question to be related to Topic 2, and as such, the objection/instruction is overruled. (6) Holland Dep. at 174:10-17 [attached as part of Exhibit 1 to the Hearing Transcript] Relating to Exhibit 3Z s reference to educate consumers to make informed decisions, the witness was asked what are you attempting to educate the consumer about? Defendants assert that this question is related to Topic 10, but the witness was instructed not to respond since the question was not relative [to] any of the trademark trade dress in dispute in this case as to any topic to which he s been designated. 15

16 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 16 of 61 Exhibit 3Z is a power point presentation apparently created by the Johnson Group, and advertising and marketing company employed by Plaintiff. The specific page giving rise to the question pertained to the objectives of creating a website for Plaintiff. After the objection was given, the witness was asked was one of the objectives in creating advertisements, et cetera, of Healthier Choice for their new website to educate consumers? The witness responded Yes and proceeded to answer a series of questions about the education of consumers, therefore curing any potential prejudice from the prior instruction. For this reason, I deem the objection/instruction to be a moot issue. (7) Holland Dep. at 180:13-20 [Dckt No at 29] The question giving rise to the objection/instruction is Then [Exhibit 4A] says rarely speak to actual consumer and then usually if there s a problem. Do you agree with that? Exhibit 4A was a proposal and a mission plan from a website development company Solar Velocity. Defendants assert that the question is related to Topics 16 and 17, dealing with instances of consumer confusion. However, the question at issue is not reasonably related to one or more instances of consumer confusion. Defendants further assert that the question is related to Topics 18 and 19 dealing with customer recognition of the trademarks and trade dress at issue. However, the question is not reasonably related to customer recognition of trade dress. Finally, Defendants assert that the question is related to 16

17 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 17 of 61 Topic 43, dealing with communications or agreements with any third party concerning this lawsuit or any defendant. Again, the question is not reasonably related to this topic. Therefore, I sustain the objection. (8) Holland Dep. at 187:22-188:4 [Dckt No at 31-32] The question giving rise to the objection/instruction is Do others in the industry of carpet padding use antimicrobial[s] allowing others to breathe easier? Defendants assert that the question relates to Topics 1 and 2, involving the creation and development of Plaintiff s trademarks and trade dress. I find that the question is not related to Topics 1 or 2 4, and thus sustain the objection. (9) Poteet Dep. at [Dckt No at 10-13] The question was asked of several former Plaintiff s employees questions to the effect of, Did [the employee] leave on good terms? This prompted a scope objection and an instruction not to answer. Defendants argue that these questions relate to Topic 46, dealing with the corporate structure and history of [Plaintiff], including a discussion of any corporate organization chart. I do not find this topic to be worded in a manner which would have put Plaintiff on notice that its witness 4 For example, the Plaintiff was not put on notice by the topic that they needed to have a witness prepared to discuss third party usage of Breathe Easier or any other purported trademark at issue, in addition to the Plaintiff s own creation and/or development of its marks. This is in contrast to a hypothetical situation where the question posed was Did you borrow the phrase Breathe Easier from any other company? which appears defensible under Topics 1 and/or 2 because it relates to the development of the mark. 17

18 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 18 of 61 needed to be prepared to discuss the circumstances upon which each of the former employees in question left the Plaintiff s employment. Therefore, I sustain the objection. (10) Poteet Dep. at 179:1-190:8 [Dckt No at 14-25] At the hearing, counsel for Plaintiff conceded that the agreement that was the subject of these questions was responsive to Topic 13 relating to consent and coexistence agreements relating to the Plaintiff s marks. [Hearing Tran. at 92] Thus, the Plaintiff s stated concerns are restricted to those questions which go beyond the questions about the agreements into more general areas of inquiry relating to the trademark prosecution history (Topic 49), for which the representative was not designated to testify. This was used as the basis for numerous inter-related instructions not to answer questions that related to at least one consent agreement. The Plaintiff is entitled to further depose the Plaintiff regarding consent agreements and co-existence agreements. Topic 13 as stated refers to agreements, at least one of which appears to have been entered for the implicit if not explicit purpose of securing registration of the Plaintiff s trademark. The context of any such agreement is difficult, if not impossible to divorce from the proceedings affecting the registration of the Plaintiff s mark. [Hearing Tran. Ex. 4] Therefore, it was improper to instruct the 18

19 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 19 of 61 witness not to testify as to consent and co-existence agreements, including the circumstances associated therewith. Plaintiff can take this into consideration and decide whether Mr. Poteet or someone else is best suited to respond to questions relating to Topic 13. (11) Poteet Dep. at 207:24-208:6 [Dckt No at 26-27] During the Poteet deposition, he was shown a report from the U.S. Patent and Trademark Office website showing 260 different trademark registrations using the word healthier. This was presumably relating to Topic 14 relating to Plaintiff s knowledge of others using the terms healthy, healthier, or healthiest in connection with the sale of goods and services. When Mr. Poteet indicated that of the 260 records in question, the only one he could see which used the words Healthier Choice together was the Plaintiff, he was asked And you believe that that Choice distinguishes it from other trademarks? Before he could answer, counsel interposed an objection on the basis that the scope was exceeded and that this was now asking about Plaintiff s contentions in the litigation. As such, he was instructed not to answer. Pursuant to Topic 14, it was appropriate to show the witness the list of records and to ask the witness which records or other uses of healthier it was aware of and at what time it became aware of them. However, asking the witness 19

20 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 20 of 61 whether Choice distinguishes its use of healthier from other registrations is not related to Topic 14. Rather, it seeks quasi-legal contentions relating to a claim of trademark rights in Healthier Choice given significant third party usage of healthier. For this reason, I sustain the objection. See EEOC v. Ceasar s Ent., Inc., 237 F.R.D. 428, 430, 435 (D. Nev. 2006) (deposition topics seeking quasilegal contentions of a party are not appropriate in context of a corporate deposition). (12) Poteet Dep. at 214:18-215:22 [Dckt No at 30-31] The question giving rise to the objection/instruction is Does [Plaintiff] have any evidence that any specific sale has been lost to the Healthier Living Installation System? Defendants assert that this question is related to Topic 3, which deals with accounting issues related to actual sales made by Plaintiff. However, this question does not relate to actual sales but to sales that were lost (i.e., potential sales which were not consummated). As such, the question falls outside the scope of Topic 3. 5 Defendants next assert that the question is related to Topic 45, which sets forth The factual basis for any claims [of Plaintiff] for monetary relief. Mr. Poteet was designated for the purpose of affirming that the written response to Topic 45 was in fact the position of the Plaintiff. Having reviewed the Plaintiff s written response to Topic 45, it is apparent that the Plaintiff has not alleged that 5 In any event, Mr. Holland was designated as to Topic 3. Mr. Poteet was not designated as to Topic 3. 20

21 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 21 of 61 any sales have been lost to the Healthier Living Installation System. As such, the question is outside the scope of the claims for monetary relief, and I sustain the objection. 6 B. The Refusal 7 to Answer Questions by the Corporate Designee As discussed above, Plaintiff s counsel apparently prepared detailed written responses to each of the deposition topics (referenced herein as the Response ). [Dckt No ] The Response set forth by topic, for example, the identities of various documents which the Plaintiff deemed responsive to the topic in question. In the case of the contention-oriented topics 31-38, 42 and 45, the responses set forth contentions that the Plaintiff held which were responsive to said topics. Defendants object to a number of occasions during the course of the corporate deposition where the witness indicated an unwillingness to answer questions about a given topic without first being given access to the Response. It is not unreasonable or unusual for a corporate designee to be provided with written information in order to satisfy the duty of the corporation to produce a 6 At the same time, because of the position taken by Plaintiff, it should be precluded at trial from offering any evidence purporting to show any lost sales because it has expressly taken the position that lost sales are irrelevant to its basis for the recovery of the monetary relief that it seeks. 7 The alleged refusals addressed in this section of the report were not based upon any instruction of counsel. [Hearing Tran. at 98] 21

22 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 22 of 61 knowledgeable witness in response to the topics noticed for deposition pursuant to Fed. R. Civ. P. 30(b)(6). Counsel for the movant agreed, for example, that counsel for the corporation may furnish the designated witness with a binder of written information responsive to each topic and that the witness may consult the binder in order to formulate responses to questions presented in deposition. [Hearing Tran. at ] After all, it is well-established that a corporate deposition is not a memory contest. EEOC v. Am. Int l Group, Inc., No. 93 CIV 6390 (PKL) RLE, 1994 WL , at *3 (S.D.N.Y. July 18, 1994). The corporation has a duty to present witnesses which are prepared to testify on the topics for which they are designated, and the rule is silent regarding exactly how that duty is to be discharged. The Defendants have identified twenty-two instances where a witness was asked a question about a topic for which they were designated, and the witness essentially responded by asking to see a copy of the Response before answering. [Dckt No. 138 at 9-12] Defendants counsel at the hearing indicated that on at least some of these occasions, he then showed the Response to the witness and asked questions, to which he received substantive testimony. [Hearing Tran. at 102] Counsel was asked to identify any instances where a witness, having refused to answer a question without seeing the Response, refused to answer once the Response was furnished. Counsel could not recall any. [Id. at 107] 22

23 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 23 of 61 Having reviewed the record of each of these instances, I am unconvinced that the witness request to see the Response before answering is or should be construed as an outright refusal to answer. As such, the portion of the motion to compel dedicated to the witness refusal to answer questions without the Response in hand is denied. C. Refusal to Designate a Witness on Topics 30-38, 42 and 45 Corporate deposition topics seeking to elicit a party s contentions in litigation are a subject of much controversy, especially in complex litigation. See Byrd v. Wal-Mart Transportation, LLC, No. CV , 2009 WL , at *4 and n.7 (S.D. Ga. Sept. 23, 1999). In one case cited by the parties, the court denied a motion for protective order concerning contention 30(b)(6) topics because they were limited to seeking factual information only and not quasi-legal argument concerning the legal bases for certain affirmative defenses. EEOC v. Ceasar s Ent., Inc., 237 F.R.D. 428, 430, 435 (D. Nev. 2006). In drawing the distinction between topics seeking facts from those seeking information about legal theories or arguments, Ceasar s cited McCormick-Morgan, Inc. v. Teledyne Ind., Inc., 134 F.R.D. 275, (N.D. Cal. 1991), overruled on other grounds, 765 F. Supp. 611 (N.D. Cal. 1991). McCormick-Morgan held that it was proper to treat certain 30(b)(6) topics as deposition upon written questions because the topics implicitly involved a 23

24 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 24 of 61 relationship between facts, application of intellectual property law and an analysis of patent claims. 8 Of course, the courts are split over the proper approach where the topics in question relate to the basis for a party s claims or defenses in the litigation. See AMP, Inc. v. Fujitsu Microelectronics, Inc., 853 F. Supp. 808, 831 (M.D. Pa. 1994) (compelling attendance of corporate representative to answer questions relating to contentions and defenses outlined in answer and counterclaims). Topics 30-38, 42 and 45 are topics dedicated to exploring the basis for the various allegations and claims in the case. Topic 30 seeks to explore the basis for the allegations of the Complaint and the Amended Complaint. This topic is especially broadly worded and applies to exploration of the factual basis underlying the factual allegations of the Amended Complaint, as well as how those facts relate to the legal theories underlying liability and damages considerations associated with the causes of action asserted in the Amended Complaint. Topics each relate to the basis for the allegations related to various specific counts of the Amended Complaint. Topic 42 relates to the factual basis underlying any contentions of willful infringement in the case, and as such, it is more limited in 8 Another case, Dunkin Donuts Inc. v. Mary s Donuts, Inc., 206 F.R.D. 518 (S.D. Fla. 2002), was willing to permit a corporate deposition but only if necessary to clarify written answers to contention interrogatories. 24

25 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 25 of 61 nature. Topic 45 likewise relates to the factual basis relating to any claims for monetary relief. The Plaintiff s Response to the foregoing topics indicated that the topics were impermissible contention style topics and that the Plaintiff was electing to treat the topics as deposition upon written questions. At the deposition of Mr. Poteet, counsel for the Plaintiff indicated that Mr. Poteet as corporate designee would stand exactly on what has been provided in [the Response] for the purposes of the 30(b)(6) deposition. [Dckt No at (Poteet Dep. at 213:2-214:8)] [Hearing Tran. at 58] I find that it was appropriate in the first instance for the Plaintiff to provide its Response to Topics 30-38, 42 and 45, treating these topics as if they were a deposition upon written questions or contention interrogatories. The litigation is complex and the allegations of the Amended Complaint are numerous and often a lay witness is prejudicially disadvantaged when it comes to the task of presenting the company s position because they are not trained in the subject matter of the litigation in this case, trademark and unfair competition law. Permitting the Plaintiff to respond initially in writing to each of these topics is fair and appropriate. 25

26 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 26 of 61 The Defendants are entitled to review the substance of the Response on each of these topics and either (a) accept the written response as the complete testimony of the Plaintiff on the topic in question; or (b) seek the opportunity to ask questions to the Plaintiff regarding the substance of its written response, including questions about particular documents, information or prior witness testimony identified in the Response on the topic at issue. Here, with the Response in hand, the Defendants have opted to request a deposition to probe further the information identified in the Response. So the question is whether and to what extent in this case the Plaintiff should designate one or more witnesses to answer such questions. In accordance with the authorities referenced above, topics requesting such factual basis have been deemed acceptable for 30(b)(6) deposition inquiry. For this reason, if Topics 30-38, 42 and 45 were the only topics in the corporate deposition notice to the Plaintiff, the motion to compel would be granted in part as to the parts of Topics 30-38, 42 and 45 which relate to the factual basis for the Plaintiff s contentions or allegations identified in each of the respective topics. However, those are not the only topics upon which Plaintiff has testified. To grant the motion outright as to these topics in light of the other thirtyeight (38) noticed topics on which the Plaintiff has previously provided a corporate designee to testify would effectively ignore the fact that there is a substantial overlap between (a) the facts underlying the contentions of the Plaintiff identified 26

27 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 27 of 61 in Topics 30-38, 42 and 45, and (b) the facts reasonably related to the other topics of the corporate deposition notice issued to Plaintiff. It would be unreasonably burdensome to require the Plaintiff to provide a witness to address facts subject to exploration under other topics of the deposition notice. For this reason, it is necessary to analyze what contentions in Topics 30-38, 42 and 45 implicate facts that are unrelated to the other topics of the deposition. Most if not all of the asserted counts of the Amended Complaint ultimately rise or fall based upon whether there is a likelihood of confusion between the Plaintiff s trademark/trade dress and the accused mark/trade dress of the Defendants. The Eleventh Circuit case uses a multi-factor test in determining the likelihood of confusion. Safeway Store, Inc. v. Safeway Discount Drugs, Inc., 675 F.2d 1160, 1164 (11 th Cir. 1982). The oft-repeated factors in Safeway Store are: (1) strength of the mark; (2) similarity of the marks; (3) similarity of the goods; (4) similarity of the sales methods; (5) similarity of advertising media; (6) defendants intent; and (7) evidence of actual confusion. Id. Topics 1-2, 7, 10, 11 and of the deposition notice at issue illustrate that the Plaintiffs have already designated one or more witnesses on topics reasonably related to the facts underlying the Plaintiff s contention that there is a likelihood of confusion between the marks and trade dress at issue. Thus, a deposition on the underlying facts relating to the Plaintiff s contentions in the 27

28 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 28 of 61 counts of the Complaint and Amended Complaint (Topics 30-38) would prove an exercise in redundancy given the topics on which Plaintiff has already been deposed. Such would be inefficient and wasteful, at odds with the most basic goals set forth in Fed. R. Civ. P. 1. (seeking the just, speedy and inexpensive determination of issues in dispute). While on this point, Defendants counsel indicated that Plaintiffs did not put up a witness relating to the factual allegations underlying the dilution or false advertising claims. [Hearing Tran. at ] This contention is meritorious insofar as there could be facts relating to these claims extend beyond the likelihood of confusion analysis implicated in most other trademark and unfair competition analysis. Topic 30 is broad enough to require Plaintiff to put up a witness to testify as to the Plaintiff s understanding of facts underlying its false advertising and dilution claims. Based on the relevant authorities, the motion to compel is denied as to questions which seek to probe legal or quasi-legal contentions of the Plaintiff. In summary, the motion to compel is granted in part and the Plaintiff shall produce one or more corporate representatives to testify as to the Plaintiff s knowledge of factual matters reasonably related to Topics 1, 2, 13, 30 (only as to facts underlying the false advertising and dilution claims), 42 and

29 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 29 of 61 In light of the fact that the Plaintiff has already produced two representatives who have been questioned extensively relating to numerous topics, the parties are hereby ordered to confer in advance of the deposition relating to: (a) the identity of each corporate representative who is being identified by the Plaintiff and the topic(s) on which each person will testify; and (b) the anticipated length of time the Defendant seeks with each representative so that reasonable time limits for each representative may be established by the parties in advance of the deposition. Any disagreements as to subpoint (b) shall be brought to the attention of the Special Master in advance, and the Special Master shall if necessary impose a time limit on the deposition of each representative. Furthermore, the Plaintiff s deposition shall proceed with the caveat that the deposition shall not seek to re-ask questions which Plaintiff has already answered in the prior corporate deposition testimony, nor shall counsel for the Defendants ask questions that are outside the scope of the Topics identified above as to which the instant motion is granted. The deposition shall proceed on a date and time agreed upon by the parties and the Special Master. The Special Master shall provide the parties a call in number so that during the deposition, if any objections are raised as to repetitious 29

30 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 30 of 61 questioning or as to the scope of questioning which counsel for the parties are unable to resolve between themselves, the parties may call the Special Master for a ruling during the deposition. 9 [Hearing Tran. at 163] Prior to the deposition, to aid the Special Master, counsel for the parties shall provide the Special Master an electronic copy of the prior corporate depositions of Plaintiff. To the extent that the Plaintiff wishes its representative(s) to have access to any pre-prepared written information or documents during the deposition, such as the Response or any materials referenced therein, it shall be the Plaintiff s responsibility to furnish the written information and/or documents to the witness at the deposition. Because the information and/or documents relate to the Plaintiff s duty to present a prepared and knowledgeable witness for the deposition, Counsel for Defendants is not entitled to deprive any representative of access to any such written information and/or documents provided to the witness by Plaintiff s counsel during the deposition. In light of the recommended rulings relating to each of the scope objections asserted during the prior deposition of the Plaintiff, the Plaintiff s motion for a 9 The presence of a Special Master acting in such a capacity renders this case distinguishable from Fidelity Mgmnt. & Research Co. v. Actuate Corp., 275 F.R.D. 63, 64 (D. Mass. 2011), where the Court was reluctant to permit further oral deposition because it was not available to act as a referee over anticipated objections. 30

31 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 31 of 61 protective order relating to the scope of deposition questions [Dckt No. 149] is denied as moot. III. THIRD PARTY SUBPOENA PRACTICE (MOTION 3) The next motion at issue is Plaintiff s Motion for Protective Order Regarding Defendant s Abusive Third-Party Subpoena Practice. [Dckt No. 152] This motion seeks an order prohibiting Defendants from issuing further non-party subpoenas without leave of Court. At the hearing, Defendants counsel indicated that the Defendants do not presently possess plans to issue any further subpoenas to third parties. [Hearing Tran. at 149] In an effort to resolve this issue to the mutual satisfaction of the parties, the Special Master suggested that the parties confer prior to the issuance of further subpoenas, and contact the Special Master only in the event of a disputed issue relating to a putative subpoena. [Id. at 151] Defendants counsel indicated this approach would be satisfactory so long as Plaintiff s counsel is not permitted to act on the information relating to the anticipated subpoena in advance of its issuance and formal notice pursuant to Fed. R. Civ. P. 45. [Id. at ] Plaintiff s counsel likewise agreed with this approach. [Id. at 152] For these reasons, in the event the Defendants wish to issue further subpoenas, Defendants counsel shall confer with Plaintiff s counsel as to the 31

32 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 32 of 61 subpoena. In the event that there is an objection to the subpoena, the parties shall each contact the Special Master by and a telephone hearing will be set for argument on the matter. Counsel for the Plaintiff is to keep the information relating to the identity of any third party to be subpoenaed strictly confidential and shall not use it for any purpose other than to present argument to the Special Master pending the issuance of the actual subpoena. [Hearing Tran. at 154] Based on the process outlined above, the Motion for Protective Order [Dckt No. 152] is denied as moot. IV. THE DEPOSITION OF MICHAEL NORTON (MOTION 4). The next motion at issue is Plaintiff s Motion for Protective Order limiting the timing and scope of the deposition of Michael Norton in his individual capacity. [Dckt No. 166] By way of background, Mr. Norton has already been deposed two times in the case first, as an in-house expert for the Plaintiff, and secondly, as a corporate representative designated by Plaintiff to testify on one or more topics. Subsequent to his deposition testimony, he was identified by Plaintiff in supplemental Rule 26 disclosures as based on an apparent contact with someone in California who may have expressed confusion between the marks of the Plaintiff and Defendant. [Id. at 157] There was at least one other basis stated by Defendants as justifying the need for an individual deposition of Mr. Norton. 32

33 Case 1:11-cv CAP Document 187 Filed 01/04/13 Page 33 of 61 Defendant s counsel indicated during the hearing that he does not need more than three hours with Mr. Norton. [Id. at 160] Counsel for Plaintiff indicated that there is concern that in each of his prior two depositions, he was asked questions outside the scope of the deposition s purpose, and that this should count against the time for his individual deposition. [Hearing Tran. at ] The Special Master has considered the prior depositions and the stated reasons put forth by Defendants counsel for desiring to take the individual deposition of Mr. Norton. The Special Master will grant the Motion for Protective Order in part and deny it in part. Defendants are permitted to take a deposition of no more than two and a half hours in duration of Mr. Norton, and with the caveat that the deposition shall not seek to re-ask questions which Mr. Norton has already answered. The deposition shall proceed on a date and time agreed upon by the parties and the Special Master. The parties shall provide copies of each of Mr. Norton s prior deposition transcripts to the Special Master in advance of the deposition. The Special Master shall provide the parties a call-in number so that during the deposition, if any objections are raised as to the scope of questioning in light of this protective order which counsel for the parties are unable to resolve between themselves, the parties may call the Special Master for a ruling during the deposition. [Hearing Tran. at 163] 33